Professional Documents
Culture Documents
No. 15-2844
ROVNER, Circuit Judge. Slep-Tone Entertainment Corporation and its successor in interest, Phoenix Entertainment
Partners, LLC1 (collectively, Slep-Tone) contend in this
litigation that the defendants, a pub and its owner, committed
trademark infringement by passing off unauthorized digital
copies of Slep-Tone karaoke files as genuine Slep-Tone tracks.
See Bretford Mfg., Inc. v. Smith Sys. Mfg. Corp., 419 F.3d 576, 580
(7th Cir. 2005) (describing passing off and reverse passing off
cases). Because we agree with the district court that Slep-Tone
has not plausibly alleged that the defendants conduct results
in consumer confusion as to the source of any tangible good
sold in the marketplace, we affirm the dismissal of its complaint.
I.
This suit is one of more than 150 that Slep-Tone has filed
throughout the country invoking the Lanham Act, 15 U.S.C.
1051 et seq., to challenge the unauthorized copying and
performance of its commercial karaoke files as a form of
trademark infringement. For the better part of three decades,
Slep-Tone has produced and distributed karaoke accompaniment tracks under the trademark Sound Choice. These tracks
are designed for professional karaoke systems and include
both audio and graphic (visual) components. The audio
component is a re-recorded version of a popular song that
omits the lead vocals, as those will be performed by the
karaoke singer or singers. The graphic component displays the
1
Phoenix Entertainment Partners LLC purchased certain assets of SlepTone Entertainment Corporation, including the trademarks and trade dress
at issue in this case, after this litigation commenced.
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This is a suggestion that has been developed more in the briefing and
argument than in the complaint itself. The complaint does allege that
media-shifting usually results in a copy that is inferior in quality to the
original, although it also acknowledges that the difference is typically not
discernable to the patron of a bar or restaurant. R. 20 at 4-5 22-23. The
complaint further alleges that one purpose of Slep-Tones 1:1 policy is to
help ensure the integrity of media-shifted tracks. R. 20 at 6 32. But, as the
district court pointed out, there is no affirmative allegation that the
defendants or anyone else have made, or caused to be made, copies that a
consumer would recognize as inferior. R. 13 at 17 n.7.
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expires, enabling any member of the public to copy and use the
work without license, it is not a trademark violation simply to
display the work without first deleting the mark that was
inserted into its content. Thus, as the district court pointed out
in Slep-Tone Entmt Corp. v. Canton-Phoenix Inc., a movie theater
may freely exhibit a copy of Universal Studios 1925 silent film,
The Phantom of the Opera, which is now in the public domain,
without fear of committing trademark infringement simply
because Universals registered trademark will be displayed
when the film is played. 2014 WL 5824787, at *11 (D. Ore. Sep.
4, 2014) (report & recommendation), adopted as modified, 2014
WL 5817903 (D. Ore. Nov. 7, 2014), appeal pending (9th Cir.)
(No. 14-36018). So long as Universals mark is not overtly used
to market the performance, there is no risk that a theater
patron might think that Universal is sponsoring or endorsing
the performance. Id. Likewise, another media company is free
to make and sell copies of the film without deleting Universals
mark from the credits (or obtaining a license from Universal),
so long as the packaging and advertisement of the tangible
good on which the copy is fixed and offered to the consumer
(a DVD or blu-ray disc, for example) does not use Universals
mark and thereby suggest that it is a Universal-produced or endorsed copy. Id.; see also Comedy III Prods., Inc. v. New Line
Cinema, 200 F.3d 593, 596 (9th Cir. 2000) (unauthorized use of
clip from The Three Stooges film in another motion picture did
not constitute unfair competition under Lanham Act notwithstanding plaintiffs contention that clip contained elements that
amounted to trademark; in contrast, had defendant used a
likeness of The Three Stooges on t-shirts it was selling, there
might be arguable claim of trademark violation); cf. Societe
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We have little doubt if The Basket Case removed the Sound Choice mark
from its copies of the karaoke tracks before playing them for its patrons, the
plaintiffs would be here on a different kind of complaint.
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